Ex Parte Trumble

Patent Trial and Appeal Board

Oct 31, 2016

13441611 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/441,611 04/06/2012
122022 7590
Hartman Global IP Law/
Purdue Research Foundation
2621 Chicago St., Suite A
Valparaiso, IN 46383
11/02/2016
FIRST NAMED INVENTOR
Kevin Paul Trumble
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
B2-3596 6210
EXAMINER
HEVEY, JOHN A
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
11/02/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
gayle@hartmanglobal-ip.com
domenica@hartmanglobal-ip.com
otcpatent@prf.org
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN PAUL TRUMBLE1
Appeal2016-008557
Application 13/441,611
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
maintained rejection of claims 1, 3-5, 14, 16, and 18-22 under 35 U.S.C.
§ 103 over Schievenbusch2 in view ofUeda3 as evidenced by Applicant
admitted prior art ("AAPA"). 4 We have jurisdiction under 35 U.S.C. § 6.
1 The real party in interest is Purdue Research Foundation. Appeal Br. 3.
2 Schievenbusch et al., Directional Solidification of Near-azeotropic CuMn-
alloys: a Model System for the Investigation of Morphology and
Segregation Phenomena, ISIJ Int'l 35 (1995), 619-23.
3 Ueda et al., US patent 4,402,906, issued September 6, 1983.
4 Claims 6-9 and 11-13 stand withdrawn from examination. Non-Final
Office Action mailed August 27, 2015 ("Non-Final Act."), 1.
Appeal2016-008557
Application 13/441,611
CLAIMED SUBJECT MATTER
The subject matter on appeal is directed to cast products or articles
formed from a copper-manganese alloy in which manganese comprises at
least 32 weight percent and no more than 40 weight percent of the combined
total amount of copper and manganese and which have a cast microstructure
free of dendritic growth and multidirectional columnar grains. Claims 1, 14
(the independent claims on appeal).
Independent claim 14 is representative.
14. An article cast by solidifying a copper-manganese alloy
consisting of copper and manganese and having an amount of
manganese that is at least 32 weight percent and not more than
40 weight percent of a combined total amount of the copper and
manganese in the copper manganese alloy, the article being
formed by multidirectional solidification and having a cast
microstructure free of dendritic growth and microporosity
attributable thereto, and having multidirectional columnar
grams.
Appeal Br. (Claims Appendix) 31.
We decide the appeal as to all appealed claims on the basis of claim
14, which we find representative. 37 C.F.R. § 41.37(c)(l)(iv) (2012).
DISCUSSION5
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that a preponderance of the evidence
supports the Examiner's determination that one of ordinary skill in the art,
5 We refer to the Non-Final Office Action mailed August 27, 2015, the
Appeal Brief filed January 20, 2016, the Examiner's Answer mailed July 15,
2016, and the Reply Brief filed September 15, 2016.
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Application 13/441,611
armed with the knowledge provided in the applied prior art, would have
been led to the subject matter recited in claims 1-14 and 20-35.
"[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prim a facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner's rejection. See
37 C.F.R. § 41.37(c)(l)(iv); see also In re Jung, 637 F.3d 1356, 1365-66
(Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a
prima facie case, it has long been the Board's practice to require an
Appellant to identify the alleged error in the examiner's rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) ("[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency's
determination." (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
The Examiner relies on Schievenbusch for its disclosure of a cast
copper-manganese binary alloy with a manganese component of ±5 wt% of
the azeotropic (i.e. congruent melting point) concentration of 32.75 wt%.
Non-Final Act. 3 (citing Schievenbusch sec. 2, p. 618, sec. 32, p. 621). As
noted by the Examiner, depending on the Mn content and rate of
solidification of the alloy, cellular rather than dendritic microstructure can be
obtained. Non-Final Act. 3 (citing Schievenbusch sec. 2, p. 619; Fig. 7,
p. 621).
The Examiner relies on Ueda for its disclosure of a Cu-Mn cast
product made by conventional casting in a metal mold. Non-Final Act. 3
(citing Ueda col. 4, 11. 25-32).
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Application 13/441,611
Citing to AAP A, the Examiner maintains, and Appellant does not
contest, that conventional casting provides multidirectional solidification
resulting in microstructure comprising multidirectional columnar grains.
Non-Final Act. 34 (citing Applicant arguments, filed April 1, 2015, pp. 16-
18, Exhibits A-D).
The Examiner concludes that it would have been obvious to use a
known Cu-Mn alloy composition taught by Schievenbusch in a conventional
casting method as taught by Ueda with the predictable result of obtaining a
cast alloy product formed by multidirectional solidification and exhibiting a
microstructure with multidirectional columnar grains. The Examiner
reasons that one of ordinary skill would have been motivated to use the
conventional technique of casting-rather than the unidirectional
solidification in Bridgman-type gradient furnace, as in Schievenbusch-to
obtain a cast product more cheaply and efficiently. Non-Final Act. 4.
Further, the Examiner concludes that "a cast alloy product with
substantially the same composition and made by substantially the same
method as instantly disclosed in the specification, would be expected to
necessarily possess the same properties, including those claimed." Non-
Final Act. 4.
Appellant argues the claims together on the basis of limitations
common to independent claims 1 and 14. Generally Appeal Br.; Reply Br.
Appellant's arguments are grounded on directional solidification and
conventional casting techniques differing in the velocity at which the alloy
solidifies and in the temperature gradient of liquid alloy undergoing
solidification and that these differences would have been expected to result
in different microstructure. Appeal Br. 12-25. Appellant maintains that
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Application 13/441,611
"[t]he growth velocity in conventional casting is typically much higher than
in the directional solidification techniques and decreases somewhat during
casting, and in conventional casting the temperature gradient in the liquid
starts high and decreases by orders of magnitude from the beginning to the
end of solidification of the casting." Appeal Br. 16. Appellant maintains
that the cited phase change diagram (Exhibit C) suggests dendritic growth
would result when casting at the relatively high solidification velocities
associated with multidirectional solidification that occurs during
conventional casting. Appeal Br. 13-1 7.
Appellant explains that in Schievenbusch, "[t]he castings formed at
low solidification rates generally showed planar and/or cellular
microstructures" (Appeal Br. 18), but that "Schievenbusch appears to
disclose that as solidification rate (velocity) increases, it becomes more and
more likely that dendritic growth will occur" (Appeal Br. 21 ).
As to Ueda, Appellant maintains that "Ueda does not disclose
anything that contradicts the classic schematic diagram of Exhibit C,
namely, that dendritic growth occurs when casting at high growth velocities
and uncontrolled temperature gradients associated with multidirectional
solidification." Appeal Br. 20.
Appellant contends that "it is clear that Schievenbusch obtained
[cellular morphology] under conditions intrinsically not possible to achieve
in conventional casting." Appeal Br. 22. Appellant further argues "that it
would not have been obvious to further increase the solidification velocity of
the alloy by more than an order of magnitude beyond what was already
reported as producing dendritic growth if cellular or planar microstructures
were desired." Appeal Br. 23-24.
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Appellant contends that he "solidified Cu-Mn alloys by conventional
multidirectional casting and therefore at velocities significantly faster than
those reported in Schievenbusch as producing dendritic growth; however,
the micro structure of Appellant's solidified alloys were free of dendritic
growth." Appeal Br. 24. Appellant points to "micrographs [Spec. Figs. 4
and 5] representing an alloy formed in accordance with Appellant's claimed
invention (under 'typical' casting conditions per Appellant's paragraph
[0021])." Appeal Br. 15 n.2.
On this record, we do not find Appellant's arguments persuasive of
harmful, reversible error. As highlighted by the Examiner, "[ n ]either the
claims, nor the specification, provide any limitation or disclosure relating to
the temperature gradient, growth velocity, or solidification rate." Ans. 4.
There is, accordingly, no evidence that the solidified alloy depicted in
Figures 4 and 5 of the Specification was solidified at velocities faster than
that which led to solidified alloys free of dendritic growth in Schievenbusch.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument
... cannot take the place of evidence.").
We similarly are directed to no persuasive argument or evidence that
"conventional casting" techniques do not encompass or allow for control of
solidification velocity and/or maintaining low temperature gradients such
that conditions similar to those in Schievenbusch could not have been
provided by the skilled artisan. Generally Appeal Br.; Reply Br. Rather,
Appellant relies on a Figure (Exhibit C) from "Fundamentals of
Solidification by Kurz and Fisher," 4th ed. (1998)" and maintains that it
"represents the conventional wisdom at the time of the invention" without
sufficiently explaining how that schematic representation would have led
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one of ordinary skill away from the claimed subject matter where what it
depicts is only argued to be what is typically the case in conventional
casting. Appeal Br. 16. An obviousness analysis "need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
[an Examiner] can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ" in overcoming difficulties
(KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)) and Appellant fails
to direct us to any persuasive evidence that overcoming any difficulty raised
would not have been well within the ambit of the person of ordinary skill in
the art (generally Appeal Br.; Reply Br.). As to Appellant's assertion that
the conditions used by Schievenbusch are "intrinsically not possible to
achieve in conventional casting" (Appeal Br. 22), we find it unsupported by
any persuasive evidence-except as to the solidification being
multidirectional rather than unidirectional-for the reasons set forth above.
Appellant fails, further, to provide any persuasive argument or evidence that
that difference, that solidification is multidirectional rather than
unidirectional, would have been expected to result in any difference as to
dendritic growth. Generally Appeal Br.; Reply Br.
For these reasons, on this record, we are not persuaded that the
Examiner erred in concluding that one of ordinary skill in the art at the time
of the invention, armed with the knowledge of the cited prior art, would have
been led to the claimed subject matter.
Accordingly, we sustain the Examiner's obviousness rejection.
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CONCLUSION
We affirm the Examiner's obviousness rejection of claims 1, 3-5, 14,
16, and 18-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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